Yesterday I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos. See Petition for Rehearing en banc filed in Plasmart v. Kappos. The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner ultimately concluded that claims 20-33 were patentable. The Board agreed that claims 20-33 were patentable as not being obvious, but also determined that claim 1 was patentable as well. Then at the Federal Circuit, in a nonprecedential decision, the panel determined that none of the claims were patentable.
I question whether it is appropriate to have a nonpredential opinion after the USPTO has gone through the time and expense of an inter partes reexamination. Based on the decision I specifically raised as an issue whether the original panel provided proper deference to the Board’s finding of facts, or instead merely substituted their own view. A view that I don’t believe was properly explained with the required specificity under KSR.
A factual determination of the Board is to be upheld if there is substantial evidence to support it, In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000), and a finding is supported by substantial evidence if reasonable minds might accept the evidence as supporting the factual finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). This has been translated by the Federal Circuit to mean “is the determination unreasonable?” Nippon Steel Corp. v. United States, 458 F.3d 1345, 1351 (Fed. Cir. 2006).
The factual findings of the Board relative to the scope and content of the prior art – namely the Song reference – were reasonable and supported by substantial evidence. The Board found there were structurally unique aspects not found in the prior art. Yet, the original panel did not explain why the Board’s findings were unreasonable or not supported by substantial evidence. In fact, the original panel does not offer any explanation whatsoever, instead only giving conclusions without support or explanation. This violates KSR, which explains that mere conclusions of the sort relied upon by the original panel are not enough to support an obviousness rejection. KSR at 401 (“To facilitate review, this analysis should be made explicit.”)
Furthermore, the rejection of all the claims by the original panel is made for the first time. The patent examiner in reexamination found claims 20-33 to be patentable, as did the Board, and yet there is no explanation as to what exactly was unreasonable on the part of the Patent Office. Thus, the original panel seems only to have given a new ground of rejection without the most basic explanation required. This is evident by the fact that the original panel suggested that it would be obvious and predictable to merely incorporate Song into Handong. Even the panel’s own opinion suggests this would still not result in the claimed invention.
The Panel’s Determinations in Plasmart v. Kappos
More specifically, the original panel determined that the Song reference did not anticipate claim 1 because it did not teach each and every limitation of the claimed invention. Specifically, the original panel explained at page 8 of its decision:
The Board found that Figure 1 of Song did not clearly disclose a safety wheel attached to an arm frontwardly extended from the driven part of the twisting member or how those wheels were attached to the tricycle.
Under § 102, for a claimed invention to be anticipated, each and every element of the claimed invention must be disclosed in a single prior art reference, and that reference must be enabling so as to place the allegedly disclosed matter in the possession of the public. Akzo N.V. v. U.S. International Trade Com., 808 F.2d 1471, 1479 (Fed. Cir. 1986). The original panel agreed with the Board that the Song reference lacks at least one critical limitation, but yet still concluded that one of skill in the art would merely “attach the Song safety wheel…” From a practical matter it would be impossible to attach the Song safety wheel to Handong to achieve the claimed invention. The original panel themselves found that the Song safety wheel was structurally different.
Furthermore, the safety wheel of the ‘674 patent is referred to as a “universal rolling” wheel, which is very different from the two wheel structure envisioned and claimed by Song. The Song reference does mention “universal wheels,” but those wheels are of a wholly different type, structure and function as the wheels disclosed in the ‘674 patent, which unfortunately use the same terminology.
For example, the Board decision at page 11 explains: “Song discloses that the universal wheels 24 are at both sides of the lower part of the front of the tricycle body base plate…” Thus, the Board understood the “universal wheels” of Song as different than the single “universal rolling” wheel of the ‘674 patent. There is, unfortunately, no good illustration of the Song safety wheel that clearly shows the two wheel embodiment, which is further support that a mere combination of Song and Handong could not produce the claimed invention.
Notwithstanding, it is still useful to compare Figure 1 of Song (below left) with Figure 4 of the ‘674 patent (below right). Notice the ‘674 patent “universal rolling” wheel is mounted to the center of the supporting arm. No similar supporting arm or safety wheel is shown in Song.
In fact, the two wheel structure of Song is structurally and functionally different than the “universal rolling” wheel of the presently claimed invention. Thus, the determination that claim 1 was not anticipated is appropriate. Nevertheless, the original panel concluded:
[The claimed invention] is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability)…
The difficulty with this conclusion is that it is not supported by the original panel’s own statements. No combination of Song and Handong would result in the claimed invention. Furthermore, the conclusion is based on a factually incorrect understanding of the claimed invention and the prior art, thus underscoring exactly why the Federal Circuit, as a reviewing Court, is supposed to give broad deference to the Board on matters of fact.
It seems to me that the level of explanation provided with this new ground of rejection would be insufficient if provided by a patent examiner, and would be insufficient if found in a decision of the Board. I see no way a reviewing court could dissect the original panel’s thinking because so many basic questions are left unexplained, including: (1) Why would it have been common sense? (2) What facts suggest the presence of few alternative designs? (3) How can this be “a predictable use of prior art elements” when not all of the elements are found in the prior art? (4) What was unreasonable about the USPTO determination?
Great deference is to be paid to the findings of fact of the Board to avoid merely supplanting a reasonable, rational and supported determination with one that is simply different without further explanation. Supplanting the factual findings of the agency should not be permitted with respect to an obviousness rejection made for the first time, especially when the patentee no longer has the ability to present evidence to demonstrate why the rejection is inappropriate.
This is particularly true where, as here, the USPTO has conducted an inter partes reexamination proceeding and full Board adjudication. Both the patent examiner and the Board determined the patentability of these claims in an adversarial setting. It seems inappropriate for the Federal Circuit to create a new ground of rejection at this late stage without at least giving the patentee a thorough and complete explanation, as required by KSR, or even an opportunity to respond to such new grounds of rejection.
Stay tuned for more!
PREVIEW: Up next, discussion of Tokai Corp. v. Easton Enterprises, 632 F.3d 1358 (Fed. Cir. 2011) and Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed. Cir. 2009), which like Plasmart find a claimed invention obvious even when not all elements of the claimed invention are found within the prior art.